Multiple Splits of Authority Point Out the Need to Think Strategically in Sponsored Link and Other Internet

In Internet advertising cases, multiple splits of authority make it important to think strategically both in litigating or resolving disputes and in setting corporate advertising policies.  While many lawyers are generally aware that courts in the Second Circuit take a different approach to the threshold question of whether the purchase of a competitor’s trademark as a key word to trigger Internet advertisements constitutes a “use” of the mark, which is a pre-requisite for bringing suit under the Lanham Act, there are other differences in the way courts in various circuits approach Internet advertising cases that may be equally outcome determinative.

Following analogous Second Circuit law on pop up ads, district courts in the Second Circuit have held that purchasing a competitor’s trademark as a keyword to trigger sponsored advertisements does not amount to use of the mark and is not actionable.  See, e.g., Site Pro-1, Inc. v. Better Metal, LLC, 506 F. Supp. 2d 123 (E.D.N.Y. 2007); FragranceNet.com, Inc. v. FrangranceX.com, Inc., 493 F. Supp. 2d 545 (E.D.N.Y. 2007); Rescuecom Corp. v. Google, Inc., 456 F. Supp. 2d 393 (N.D.N.Y. 2006); Merck & Co. v. MediPlan Health Consulting Inc., 425 F. Supp. 2d 402 (S.D.N.Y. 2006).²  One cou...